Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 31 December 2008

Last week the IPKat was too busy stuffing himself with chocolate mice to notice the ruling of the Court of Justice of the European Communities in Case C 276/05, The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH, a reference for a preliminary ruling made by the Austrian Oberster Gerichtshof in May 2005 -- which is a longer time ago than most Kats can remember.

Wellcome owned two Austrian trade marks -- the word ZOVIRAX and a figurative representation of that word -- each of which was registered for pharmaceutical products in Class 5; the mark is used for a top-selling treatment for genital herpes. Paranova, as many regular readers of this blog and of the inscriptions on the boxes containing their medicaments will know, is a pharmaceutical product wholesaler. In Austria Paranova marketed genuine pharma products bearing the mark ZOVIRAX in packs of 60 x 400 mg tablets (ZOVIRAX 400/60), which were legitimately put on the market in the countries of the European Economic Area and which Paranova's parent company bought in the normal course of trade. Paranova however sold its lawfully acquired ZOVIRAX in new packaging, the appearance of which was completely different from the packaging of the original. The words "Repackaged and imported by Paranova" were written in big bold block capitals on the front of its packaging which mentioned the details of the original manufacturer (in rather smaller print) but also sported Paranova's distinctive blue band.

In May 2003 Paranova wrote to tell Wellcome of its intention to market ZOVIRAX 400/60 in Austria, enclosing colour prints of the outer packaging, of the blister packs and of the instructions for use. Wellcome then asked that, in future, Paranova inform its related company Glaxo of the details of its marketing activities, attaching a complete sample of every type of packaging and disclosing the state of export and the exact reasons for the repackaging. Paranova, having disclosed the reasons for the repackaging which it carried out, but not the State of export of the pharmaceutical product in question, was again asked by Glaxo to disclose the State of export and the precise reasons for the repackaging.Glaxo also told Paranova that there was no reason to state the information concerning the parallel importer in such a noticeable manner and in larger, clearer type than that of the manufacturer’s name. Glaxo also objected to the distinctive coloured bands on the edges of the box. Glaxo then asked that a sample of all packaging be sent to it; Paranova refused, saying this wasn't technically possible -- particularly if Glaxo wasn't willing to bear the costs. Paranova actually imported ZOVIRAX from Greece, where it was marketed in packs of 70 tablets, repackaging it as 400/60 for resale in Austria.

Wellcome applied to the Handelsgericht Wien (Vienna Commercial Court) for an interim order prohibiting Paranova from offering and/or marketing repackaged ZOVIRAX where the repackaging included Wellcome trade marks if (i) the reference to Paranova was bigger on the repackaging than the reference to Wellcome, (ii) Paranova's coloured bands were placed on the edge of the repackaging and (iii) Paranova did not duly inform Wellcome, before marketing the repackaged ZOVIRAX, of the impending marketing, specifying both the State of export and the precise reasons as to why repackaging was necessary. That court granted Wellcome’s application in part. On appeal, the Oberlandesgericht Wien (Vienna Higher Regional Court) granted the application as regards points (i) and (iii), but rejected it in relation to (ii). Both parties then appealed on a point of law to the Oberster Gerichtshof (Supreme Court), which stayed the proceedings and referred the following questions to the Court for a preliminary ruling:

"1. (a) Are Article 7 of … Directive 89/104 … and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that proof that reliance on the trade mark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging itself, but also as regards the presentation of the new packaging? If the answer to that question is in the negative:

(b) Is the presentation of the new packaging to be measured against the principle of minimum intervention or (only) against whether it is such as to damage the reputation of the trade mark and its proprietor?

2. Are Article 7 of Directive [89/104] and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that the parallel importer fulfils his duty of notification only if he informs the proprietor of the trade mark also of the State of export and the precise reasoning for the repackaging?"

The European Court of Justice has now ruled as follows:

"1. Article 7(2) of Council Directive 89/104 ... is to be interpreted as meaning that, where it is established that repackaging of the pharmaceutical product is necessary for further marketing in the Member State of importation, the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor.

2. Article 7(2) of Directive 89/104 ... is to be interpreted as meaning that it is for the parallel importer to furnish to the proprietor of the trade mark the information which is necessary and sufficient to enable the latter to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation".

The IPKat knows how pleased the Court of Appeal for England and Wales will be now that this ruling has been given, since that court was awaiting this decision before giving its own final decision in the long-running saga of Boehringer Ingelheim v Swingward, which was itself twice referred to the European Court of Justice for a preliminary ruling (see most recently the IPKat note here). Merpel says, I'm getting all confused again. The court says "the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor"; I can understand that damage to the reputation of the trade mark is part of the formula that constitutes trade mark infringement, but I just don't get the bit about damaging the reputation of the trade mark's proprietor.

The British New Years Honours list has just been published (you can read it in full here) and it contains the names of at least three people whose honours are connected with intellectual property (the full list is 95 pages long and the grounds on which honours are given is sometimes a little cryptic). Anyway, this year's IP stars are

* Christine Reid (Lambert Group), who becomes a MBE (Member of the British Empire) for services to collaborative research and innovation;

* Geoffrey Drage (no affiliation given) has been awarded the OBE (Order of the British Empire) for services to intellectual property rights.

Congratulations, says the IPKat. It's good to see IP-related activity recognised at the highest levels. Merpel is a little puzzled though. Normally a Kat who prides herself on her vast knowledge of the IP fraternity, she is a little embarrassed to confess that she is unfamiliar with all of these names. She wonders whether any of her readers might please enlighten her?

As in previous years, the IPKat has compiled a little list of characters who, having died in 1938, will no longer be protected by copyright in respect of authors' works in those countries in which the term of copyright protection expires at the end of the 70th year after the year in which they died. As from tomorrow, therefore, in those many countries, you will be able to exploit commercially, without let or hindrance, the works of the following creators:

Archibald Belaney was born into an English farming family and was raised in the Hastings countryside by his grandmother and two maiden aunts. He left school at the age of sixteen and moved to Canada shortly after in 1905. Belaney told people he was the son of an Apache woman and had emigrated from the US to join the Ojibwa. He adopted a native indentity and the name ‘Grey Owl’ (or Wa-sha-quon-asin, from the Ojibwe wenjiganoozhiinh, meaning "great grey owl"). After several years working as a wilderness guide and forest ranger, Grey Owl started to publish his writings about wilderness life. In his articles and books he promoted the ideas of environmentalism and nature conservation. In the later years of his life, Grey Owl toured England in Ojibwa costume to publicise his works and lecture on conservationism. His aunts recognised him but remained silent. It was only after his death in 1938 that doubts arose over his First Nations identity. The discovery that ‘Grey Owl’ was an invention led to some of his books being withdrawn from publication, and general disillusionment with his conservationalist causes.

Declared by his Prime Minister as “the Robert Burns of Australia”, C.J. Dennis is famous for his humorous poetry. Clarence James Dennis (known as ‘Clarrie’) was born in Auburn, South Australia, and published his first poem at the age of nineteen. He went on to publish in “The Bulletin”, and is considered one of Australia’s three most famous poets. Dennis’ 1916 publication of The Sentimental Bloke sold 65,000 copies in its first year. The Songs of a Sentimental Bloke are written in dialect, describing the day-to-day adventures of a man, his girl Doreen, and friend Ginger Mick. Over the decades The Sentimental Bloke has been adapted as a stage play, a silent film, a sound film and a musical, with the title character even featuring on a series of Australian stamps in the 1980s.

Despite the fact that Benjamin Robertson Harney was claimed by some to be African-American, records prove that the pioneer musician Ben Harney was born into a well-established white family from Tennessee. His early songs were great hits in the 1890s, and the sheet music of “Cake Walk in the Sky” is the first written example of vocal ragging. Harney then moved to New York, where he became known as “the rag time pianist”. By 1897 Harney had published Ben Harney’s Rag Time Instructor, with the first descriptions of how to improvise ragtime music by syncopating popular tunes. As ragtime became increasingly popular, Harney began to advertise himself as “the Father of Ragtime”. It is debatable whether or not he deserved such a title, but there is little doubt that Harney was a highly influential figure in the development of American ragtime music.

Muhammed Iqbal was born in British India (now Pakistan) into a deeply religious Muslim family. Proficient in several languages, Iqbal travelled and studied widely, obtaining qualifications in philosophy, English literature, Arabic and Law from various institutions in Europe, including Cambridge University. Dividing his time between law and poetry, Iqbal directed his works towards the wider Muslim community, lamenting the state of disunity and the loss of spiritual and religious values. Writing in Persian and Urdu, Iqbal worked on reinstating the Islamic principle of unity and solidarity amongst Muslims in India. He became the first politician to articulate the ‘Two-Nation Theory’ – that Muslims needed political independence from other regions of India. The latter part of Iqbal’s life was dedicated to political activity, and his vision of an independent Muslim state inspired the creation of Pakistan. Widely referred to as Allama (‘the scholar’) Iqbal, his Urdu and Persian poetry is regarded amongst the greatest of the modern era, and the anniversary of his birth is marked as a national holiday in Pakistan to this day.

Born and educated in England, Newbolt graduated from Corpus Christi College, Oxford, and was a practising lawyer until 1899. His first novels were written in the early 1890s, but his literary reputation was not established until the publication of Admirals All, a set of ballads produced in 1897. The best known of these, and the poem for which Newbolt is mainly remembered, is “Vitaï Lampada”. The ballad is written about a future soldier who learns stoicism from playing cricket. The poem was highly regarded during the First World War, but became heavily satirised by soldiers returning from the Western Front. The poet was knighted in 1915, and awarded the ‘Companion of Honour’ seven years later. Newbolt’s 1914 fantasy novel Aladore was reissued by Newcastle Publishing Company in 1975, as the new holders of the copyright.

Elzie Crisler Segar was an American cartoonist, the son of an Illinois handyman. He was determined to make his way as a cartoonist from the age of eighteen, investing $20 in a correspondance course in cartooning. After a day working as a film projectionist in the local theater, Segar would “light the oil lamps” and work on his course until three in the morning. His first comic, “Charlie Chaplin’s Comedy Capers”, was published in 1916. Segar eventually worked his way into New York, drawing Thimble Theatre for the New York Journal. The strip featured the characters ‘Olive Oyl’, ‘Castor Oyl’ and ‘Ham Gravy’. It was not for another ten years, in 1929, that ‘Popeye’ joined their ranks. The new character was enormously popular and became the permanent featured character of the comic strip. After Segar’s early death from liver disease at the age of forty-three, his assistant Bud Sagendorf continued to produce the comic for decades to come.

Kasym Tynystanov was born in 1901 in a small village of Issyk Kul district. Before the Socialist Revolution, Kyrgyz people had no written language but Kasym learnt to read and write the Arabic alphabet from his father. At the start of the twentieth century, the level of literacy amongst Kyrgyz nomads was approximately two per cent. In 1916, after an unsuccussful revolution, most of the residents of Issyk Kul fled to China to escape from Russian troops, Kasym and his family among them. When they returned, Kasym spent two years trying to get an education, eventually finding some opportunities in Almaty. As a student in Tashkent city, Kasym started to develop the first Kyrgyz alphabet. Four years later, the first Kyrgyz screenplay was performed by students from Tashkent and Almaty. Some of Kasym’s poetry and prose began to appear in Kazakh newspapers, printed in his new Kyrgyz script. Kasym’s songs, also written in this script, were very popular with Kyrgyz youth. In 1924 after the approval of the new alphabet, Tynystanov created the first Kyrgyz readers for the first three grades of primary school. Some ninety percent of the whole terminology created by Kasym is still in use today. He created curricular as well as textbooks on language study for pedagogic institutes. Alone and as a co-author he compiled terminological dictionaries on seven subjects. Kasym served as the Kygyz Republic’s first Minister of Education, establishing in his short lifetime the country’s first and lasting system of education.

Zitkala-Sa, which translates as Red Bird, was a native American writer, editor, musician, teacher and political activist. She was raised in South Dakota, in traditional style, on the Yankton Sioux Reservation. When she reached the age of eight, Zitkala-Sa was removed from the Reservation to attend a Quaker Mission school in Indiana, designed to ‘civilise’ Indian children. From there she went on to study at the Boston Conservatory of Music. In 1913, Zitkala-Sa composed the first American-Indian grand opera, The Sun Dance. Living in Boston as a teacher, she began to publish short stories and autobiographical anecdotes. These were serialised and later published in a collection called American Indian Stories. Zitkala-Sa’s first novel was compiled from folktales gathered during visits home to the Reservation. In her later years, Zitkala-Sa moved away from legend and autobiographical narrative to produce political works, alongside her work as a research agent for the Indian Welfare Committee. She published montly articles and a number of books depicting the hardships of being forced away from home into boarding school, and the alienation she felt in both worlds.

Although he published only three books of poetry, Vallejo was considered an extremely influential poet of the twentieth century. He was born in a village in the Peruvian Andes, as one of eleven children. Whilst working on a sugar plantation, Vallejo witnessed the exploitation of agrarian workers, which had a great impact on his political views. In 1916 Vallejo moved to Lima where he worked as a schoolteacher, meeting artistic and political avant-gardes. It was in Lima that he published his first poetry collection in 1919. The next few years were an extremely disastrous period for him: he had an affair, lost his job, his mother died, and he served a short term in prison. When he emerged in 1922 Vallejo produced his second book of poems, Trilce, which remains one of the most radically avant-garde collections in Spanish literature. His last burst of poetic activity came in the late 1930s, after being emotionally involved in the Spanish Civil War. Vallejo also wrote a number of novels and plays, not all of which were published in his lifetime.

Wang Zhen was a modern Chinese artist of the Shanghai school. Wang Zhen was a close disciple of the painter Wu Changshuo, who became his mentor. There are those who claim that certain paintings attributed to Wu Changshuo are actually by Wang Zhen. Wang Zhen spent most of his life in Shanghai. He was an expert calligrapher as well as a painter, and specialised in portraying flowers, birds and Buddhist subjects. Wang Zhen’s paintings were particularly popular in Japan at the time, and this Japanese association is considered to be the reason why the artist never achieved great success amongst his compatriots, a fact which remains to be rectified.

The IPKat says, if you'd like to nominate any other authors, artists, dramatists, composers etc for the 1938 Hall of Fame, please post your suggestions as comments below.

Tuesday, 30 December 2008

Earlier this month the Court of Justice of the European Communities ruled on the criteria for establishing validity under European competition law of an allegedly abusive and discriminatory scheme for the licensing of copyright works by a copyright collecting society. This ruling can be found in Case C‑52/07, Kanal 5 Ltd and TV 4 AB v Föreningen Svenska Tonsättares Internationella Musikbyrå (STIM), a decision dated 11 December 2008, in response to a reference for a preliminary ruling from the Marknadsdomstolen (the Swedish Market Court) on February 2007.

In short STIM (the Swedish Performing Rights Society) operated three different methods for charging TV channels to use its members' music in television broadcasts:

* Kanal 5 and TV4 (both private commercial channels) were charged a proportion of their revenue derived from advertising and subscriptions, in relation to the amount of time for which STIM's works were transmitted, the charge being made at the end of each year.

* SVT (a public broadcaster) was charged a proportion of an annual hypothetical revenue sum, the charge being fixed at the beginning of each year and without taking into account the actual duration of broadcasts of STIM's works.

* TV channels that had yet to register any significant turnover were charged a minimal amount, taking into account (i) the actual duration of broadcasts of STIM's music and (ii) the number of viewers.

Kanal 5 and TV4 claimed that STIM was abusing its dominant position under Article 82 of the EC Treaty since STIM's fee model was discriminatory and, in their case, led to excessive charges; the companies also argued that there was insufficient linkage between the cost of STIM's licence and their actual revenues.

The Marknadsdomstolen stayed the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is Article 82 EC to be interpreted as meaning that a practice constitutes abuse of a dominant position where a copyright management organisation which has a de facto monopoly position in a Member State applies to or imposes in respect of commercial television channels a remuneration model for the right to make available music in television broadcasts directed at the general public which involves the remuneration being calculated as a proportion of the television channels’ revenue from such television broadcasts by those channels?

(2) Is Article 82 EC to be interpreted as meaning that a practice constitutes abuse of a dominant position where a copyright management organisation which has a de facto monopoly position in a Member State applies to or imposes in respect of commercial television channels a remuneration model for the right to make available music in television broadcasts directed at the general public which involves the remuneration being calculated as a proportion of the television channels’ revenue from such television broadcasts by those channels, where there is no clear link between the revenue and what the copyright management organisation makes available, that is, authorisation to perform copyright-protected music, as is often the case with, for example, news and sports broadcasts and where revenue increases as a result of development of programme charts, investments in technology and customised solutions?

(3) Is the answer to Question A or B [whatever happened to (1) and (2), the IPKat wonders] affected by the fact that it is possible to identify and quantify both the music performed and viewing?

(4) Is the answer to Question A or B affected by the fact that the remuneration model (revenue model) is not applied in a similar manner in respect of a public service company?’

The Court of Justice has given its answer:

"1. Article 82 EC must be interpreted as meaning that a copyright management organisation with a dominant position on a substantial part of the common market does not abuse that position where, with respect to remuneration paid for the television broadcast of musical works protected by copyright, it applies to commercial television channels a remuneration model according to which the amount of the royalties corresponds partly to the revenue of those channels, provided that that part is proportionate overall to the quantity of musical works protected by copyright actually broadcast or likely to be broadcast, unless another method enables the use of those works and the audience to be identified more precisely without however resulting in a disproportionate increase in the costs incurred for the management of contracts and the supervision of the use of those works.

2. Article 82 EC must be interpreted as meaning that, by calculating the royalties with respect to remuneration paid for the broadcast of musical works protected by copyright in a different manner according to whether the companies concerned are commercial companies or public service undertakings, a copyright management organisation is likely to exploit in an abusive manner its dominant position within the meaning of that article if it applies with respect to those companies dissimilar conditions to equivalent services and if it places them as a result at a competitive disadvantage, unless such a practice may be objectively justified".

In other words, the IPKat says, never mind the principle -- just focus on the detail. Licence revenue based on the licensee's income is not an abuse except where it is, while discriminatory charging is an abuse except where it isn't. The reality is that abusive licensing is determined by looking at (i) proportionality, (ii) the licensor's administrative convenience and (iii) objective justification. Merpel says, there are still some interesting questions for the Swedish court to ponder as to the nature of the market(s) in which TV channels operate. In one sense they all compete with one another for the viewer's attention, while in another they do not (eg a sports channel is hardly substitutable for a diet of soap operas or nature programmes). It will presumably be necessary to assess this issue as a preliminary to determining whether discriminatory licence terms can be justified.

IPKat note on the Advocate General's Opinion -- which is now available in fifteen EU official languages, including Maltese, but not English -- hereSee what's on Swedish TV hereAll the Swedish TV channels here

Are you an IP expert with time on your hands and an urge to be constructively critical? The Journal of Intellectual Property Law & Practice (JIPLP), published monthly by Oxford University Press and edited by IPKat team blogger Jeremy, is urgent need of fresh volunteer talent to help peer-review articles that have been submitted for publication. Right now, with several peer-reviewers worn out, hors de combat or up to their ears in reviewing, JIPLP would be delighted to hear from you if you think you've got what it takes.

Just email Jeremy here, marking the subject of your email "Peer Review" and (if he doesn't know you yet) summarising briefly your field of IP expertise and saying whether you've had any peer-review experience. And please be patient -- it may take him a few days to reply ...

Monday, 29 December 2008

London-based IP practitioner and blogger Shireen Smith writes to tell the IPKat's readers of a potentially very important development. She says:

"I am organising a meeting of sole practitioner IP/IT law firms to explore the possibility of sharing certain costs and resources, particularly those of working towards Investors in People and Lexcel accreditation. Also, it would be worth seeing whether a group of us could get 'consortia buying power' for common expenses like Professional Indemnity cover, buying information services and Continuing Professional Development (CPD).

One reason for this is the regulatory changes being brought about by the Legal Services Act (LSA). Some have predicted these regulatory changes will reduce the number of small firms by more than one third (see eg here).

While I believe the prospects for small niche IP law firms are excellent, some adjustments are clearly desirable to achieve the economies of scale that larger firms enjoy. For example, it is very time-consuming to get Lexcel accreditation, as there is a need to put in place many systems, procedures and policies. Additionally, keeping on top of the minutiae of the ever-changing Money Laundering, Solicitors Regulation Authority and Solicitors Accounts rules and regulations is challenging for smaller firms.

Sharing costs with other sole practitioner solicitors may be a possible solution to better manage the time commitment and resources these matters require. For example, how about if a group of IP law firms were to hire an Investors in People or Lexcel consultant to run through all the generic material with us, spending time individually with each of our practices thereafter to help us prepare for accreditation? Another benefit of combining forces may be for the group (if regulatory burdens became overwhelming) to employ a part time ex-solicitor working from home to develop expertise in money laundering, SRA rules etc. Similarly, there could be scope to share CPD costs/events.

This is all at a preliminary exploratory stage and to some extent it depends on the take-up and interest from other IP law firms as to what happens next. If there is insufficient interest among IP sole practitioners for Investors in People and Lexcel, or to buy certain information services like the Encyclopaedia of Forms and Precedents, I may instead look to combining forces with non IP/IT sole practitioners for certain areas of common interest, and with both IP law firms and trade mark and patent attorneys for other areas of interest.

So, initially I am just targeting sole IP/IT solicitor firms because one of my aims is to consider the possibility of harnessing our buying power for professional indemnity insurance. Once we have the first exploratory meeting it will become clearer how to move forward thereafter.

I propose to set up a meeting early in the New Year to discuss this with any interested solicitor IP/IT sole practitioners. So if you are interested please let me know:

1. Whether you prefer a breakfast, lunch or evening meeting and any days of the week or fixed dates that you are unable to accommodate in January or February.

2. Whether you are interested in applying for Lexcel or Investors in People.

To reduce the barriers presented by distance, I intend ultimately to use web-enabled remote meetings as the preferred method of communication within the group, and to keep physical meetings to an absolute minimum".

If any reader of this post would like to contact Shireen, she can be emailed here.

There were really no excuses for the IPKat to take so long to write a little note on Case C-16/06 P Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S. This was the final ruling that France Telecom SA's MOBILIX Community trade mark application (Classes 9, 16, 35, 37, 38, 42) was not likely to be confused with Obelix, a much-celebrated character in Albert René's equally celebrated Asterix the Gaul comic strip -- and also a Community trade mark in its own right for a wide range of goods and services.

Right: Despite his strength, Obelix has failed to carry the day with the jurists of Luxembourg.

Albert René had claimed that CTM protection for the name of the Mobilix mobile phone service across the EU would risk confusing consumers on the ground that the words MOBILIX and OBELIX were similar and the latter was used on products of a similar nature, such as computer programs.

OHIM accepted the MOBILIX mark for registration in 2002 on the basis that the similarity was effectively offset by the fact that everyone knew Obelix as a fictional character (the "counteraction" principle). A OHIM Board of Appeal allowed the Paris-based publisher's opposition in part. In respect of MOBILIX "signalling and teaching apparatus and instruments" and OBELIX "optical and teaching apparatus and instruments" (Class 9) and MOBILIX "business management and organisation consulting and assistance, consulting and assistance in connection with attending to business duties" and OBELIX "marketing and publicity" (Class 35) there was a likelihood of confusion in the mind of the relevant public -- but that there was no such likelihood in respect of the other goods and services for which registration of MOBILIX was sought. Albert René's appeal was dismissed in 2005 by the Court of First Instance of the European Communities (CFI), which concluded that the Board's assessment was correct. It is the decision of the CFI which has been upheld this month by the Court of Justice of the European Communities.

A Bloomberg report from Stephanie Bodoni records that Jochen Pagenberg (Bardehle Pagenberg Dost Altenburg Geissler), the highly respected attorney for the French publisher, was less than happy with the decision. He is quoted as saying:

"I am completely bewildered. Only one single letter separates our trade mark from the Mobilix name. If that isn't enough anymore to justify a risk of confusion, then we can throw away the whole trade mark law".

The IPKat begs to disagree. He thinks that the examiner, the Board of Appeal, the CFI and the Court of Justice have got it dead right. The "counteraction" theory, annunciated so clearly in the Picasso/Picaro dispute in Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643 (noted by the IPKat here) seems totally appropriate. Possibly this is because, when he first saw the MOBILIX mark, it suggested to him the word "mobile" and did not even call to his mind the menhir-tossing Obelix. Merpel says, how curious it is that, even after more than a decade of attempts to establish common standards, lawyers in some jurisdictions still appear to prefer a far lower threshold as to what constitutes "confusion" than do their brethren in other countries. Is this a crafty attempt to avoid being entrusted with the weekly trip to the supermarket to do the family shopping?

Wednesday, 24 December 2008

Last week, Mr Justice Floyd delivered his judgment in the case of ratiopharm & Sandoz v Napp Pharmaceuticals, but the IPKat has been taking a while to digest this very long and complicated judgment. The case related to two of Napp's EP(UK) patents for sustained release formulations for the painkiller drug oxycodone, more commonly known (at least to Rush Limbaugh) by the trade mark OxyContin.

Sandoz and ratiopharm (not to be capitalised, apparently) had applied to revoke the two patents, EP0722730 and EP1258246 (derived from a common priority application) on the grounds that the claimed invention in both was obvious. Napp counter-claimed for infringement. The invention, which was not at all easy to identify, came down to the particular way in which the claimed formulation provided an extended release of oxycodone over time, apparently allowing a more controlled dosage within specified limits. This was achieved by having an oxycodone salt mixed into a resin matrix in the form of a spheroid, with an outer coating to control release of the salt.

Strangely enough, given that the case was kicked off by actions for revocation, the main issue came down to whether the alleged infringing product, in the form of a multi-layered particulate form of oxycodone (pictured left in cross-section) did actually infringe any of the claims in question. The alleged infringement was based on a central (non-pharmaceutical) core, surrounded by three layers having different functions, the first and third of which (inner and outer layers in the picture) contained oxycodone. The outer layer, containing about 20% of the total amount of oxycodone, would provide an initial dose, while the rest of the drug, bound up in the inner layer, would release over time by diffusing out through the polymer layer.

Probably the easist of the claims in question to understand was the following one, claim 6 from EP0722730:

A controlled release oxycodone formulation for administration to human patients, comprising:(a) an analgesically effective amount of spheroids comprising oxycodone or a salt thereof and a spheronising agent;(b) each spheroid being coated with a film coating which controls the release of the oxycodone or oxycodone salt at a controlled rate in an aqueous medium.

Construction of the claims was a question best answered with reference to the familiar approach offered by Lord Hoffmann in Kirin Amgen:

"Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the meaning of the words the author used", but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience." (paragraph 32)

Floyd J concluded, after extensive analysis of the wording of the claims, that the claims in question required either all the oxycodone to be included in the matrix, and not in the outer layer, or that a spheronising agent (i.e. something that allowed a spherical particle to be formed) was required in the formulation. Neither of these constructions could be used to cover the alleged infringement, since the particle did not have a spheronising agent (the central non-active core was pre-made, and not judged itself to be such an agent), and a significant proportion of the active ingredient was in the outer layer of the particle.

Floyd J went on to conclude that the patents were valid, and not obvious in light of the cited prior art (though the IPKat wonders how valuable they are now, if they can be worked around so easily).

The IPKat thinks that this case demonstrates that there are cases where meticulous verbal analysis is definitely required to figure out what a patent actually claims, as otherwise it would be difficult to show where the boundaries of the invention lie. It didn't help, however, in this case that some of the claims were apparently (in the words of Floyd J) "very poorly drafted", making the task of figuring out what they meant even more difficult than usual. This might be an effect of hindsight, but the IPKat wonders why, for such an important (i.e. money making) drug, the claims in this case were not drafted better. Could Napp not afford a patent attorney who understood how to draft dependent claims? And how did this get past Article 84 requirements at the EPO?

Tuesday, 23 December 2008

While almost every serious commentator in the field of contemporary copyright law takes the view that no case has been established for the extension of copyright term in respect of sound recordings, the case for the extension of the protection term enjoyed by performers themselves has at least one doughty advocate.

Right: these worthy performers can be found among the cyber-cats greeting cards, here.

While the record companies in the 1990s indubitably "missed the boat" when attempting to debate and adjust their commercial practices to accommodate the developments of the internet - and now are suffering the consequences - there are moral arguments surrounding this new development. The songwriter and performer occupy the only moral high ground in the economic environment that is the music industry. This economic model of copyright has been taken to extreme by record companies. Guy Hands's early pronouncements about executive and administrative waste soon after his purchase of EMI were on point, but an understanding of the way artists are contracted by record companies demonstrates that those at the bottom of the royalty food chain - in this case the artist - have reasons for moral outrage.

Recording artists are " given" an advance to make an album. This advance has to be repaid, and repayment is made through the royalty percentage (between, say, 15% and 25%) the record company agrees to pay the artist. Artists who complete one album, the copyright of which the record company owns, and are on course for their record company to call for a second (or third) album (which the record company willalso own) are provided with a second (or third) advance. As before, this advance or loan has to then be recouped from income generated by sales of the artist's recordings. Money in the form of royalties is payable to the artist after they have recouped their advance - but it is payable in clearly defined accounting periods. If an artist has been lucky enough to recoup their first advance, they would be entitled to royalites which the record company and its subsidiaries have already received, and to be paid at the next accounting date - this is known as "pipeline income". But, if an artist is asked to deliver the next album, and the next advance is paid, the artist's entitlement to royalties is subject to the recoupment of the second advance. Thus, as a matter of accounting for an individual artist, the artist will have been loaned their own pipeline income, and will then have to recoup (or repay) this, their own, money before they once again approach a position where they may, possibly, receive actual royalites in the form of cheques. This is, to be generous, an imaginative economic model.

And, hairdressing salons and other small businesses will not be required to pay "a hidden extra tax" in the form of higher music licence fees. The fees for music use are set by the collecting societies, in the case of the sound recording copyright Phonographic Performance Limited. PPL licenses users and pays the fees across to the record companies whose copyright recordings have been played and to the performers whose performances were on those sound recordings. The societies' activities are regulated by the Copyright Tribunal and unreasonable increases in licence fees requested would certainly be challenged in that forum.

Performers fought long and hard to persuade the UK Government to grant them a statutory right to income from the broadcast and public performance of their performances on sound recordings. It was the intervention of the EU (EC Directive 92/100) that eventually meant the performers shared in this income - income that the record companies alone had been receiving since the 1970s (and had only minimally shared with performers on an ex gratia basis). There was no accompanying great hike in PPL licence fees to accommodate these new rightowners (the performers). The PPL distribution practices were simply altered.

The Directive that improved the lives of performers by giving them so-called secondary income that was not subject to the record companies' recoupment practices arose from the Rome Convention. This was an international convention that began life at the International Labour Organisation before the Second World War. The man that drafted much of the Convention, the late Ted Thompson, advised me that in its original draft, the Convention was to have given this right to broadcast and public performance income to the performers alone. Technological developments during the War prompted broadcasters and record companies to "get in on the act" in revised drafts after the War.

Performers have waited a long, long time to be treated more equitably and we should be pleased for the older and the lessser known, but equally deserving, artists, to whom this extension of term may make a useful financial difference. It is interesting that this concession has arrived at a time when, arguably for some, record companies need performers more than performers need record companies".

The IPKat is curious to know what his readers think. Please let him have your comments below.

Monday, 22 December 2008

You've got to feel a bit sorry for Sir Allen Stanford, the Texan-Antiguan patron of West Indian cricket. Last week's Daily Telegraph reported that Sir Allen is being sued by Stanford University for trade mark infringement. The university is concerned that Sir Allen's attempts at trade mark registration involve “intentional and bad faith conduct". The claim also seems to rely on likelihood of confusion. It seems that the university is conscious that Sir Allen wants to introduce cricket to the US and may affect the university's merchandising activities.

The IPKat isn't impressed. How can it be bad faith to use your own name? Moreover, he doubts that there is that much advantage for Sir Allen in associating cricket with a US university - our transatlantic cousins are gifted in many ways, but generally not in the relationship between willow and leather.

The IPKat had a good chuckle, and a good think too, concerning the corporate logo parodiespublished in Corporate Pundit and drawn to his attention last week by his friend Tomasz Rychlicki. There are several different schools of thought relating to parody of this nature. One is that it is unfair to the brand owner and ultimately corrodes the value of the brand; another is that it is just good clean fun; a third is that it is not so much a reflection on the brands parodied as on the diminished aspirations of the consumers whose support and loyalty brought them to prominence in the first place. In the case of Chrysler and Ford this is particularly so: the products remain desirable but it is the reduced purchasing of the power that resultsin weak sales as even many of the most loyal drivers find that their new or replacement purchases must be delayed or deferred.

To parodies such as this, the best sort of response is probably "grin and bear it" -- not least since even the choice of brands to parody is a sort of compliment: these are the logos we choose to accompany us on our long hike through the nether world of diminished consumer aspirations. And these are the brands that we will return to when our spending power is restored ... if they're still there.

Friday, 19 December 2008

A new, and rather disturbing, feature recently appeared on the website of the UK-IPO (thanks to G for pointing the IPKat to it). This is, on the face of it at least, a rather harmless game called 'Patent Pit', which seems to have been rather heavily inspired by (though obviously in no way infringing any intellectual property in) the BBC's Dragons' Den. Instead of the real life characters of Theo, Peter, Duncan, Deborah and James, however, we have the cartoon characters of Novelty Norvello, Inventive Igor and Marketing Marion, with the game being hosted by Evan Davies lookalike, Filament Fred. IPKat readers may recall that these characters came to light recently in the form of UK trade mark applications made last month, at which point we were only previously aware of Fred's existence in the form of the grotesque guide to the IPO's Annual Review of 2007 (danger: BIG pdf download).

The game itself involves picking an 'invention' (and trying not to pick a 'non-invention', such as Beethoven's fifth symphony on a clearly patentable tape recorder- the less said about this bit, the better), and then getting it past all three dragons by showing it to be novel, inventive and worth selling (since when has this been a requirement for getting a patent?).

The IPKat wasted an enjoyable few minutes playing the game, and managed to get maximum points by picking the lava lamp and answering the rather odd questions in the way he thought they needed to be answered (just like taking the UK finals then, really). One particular point, however, made him think about whether the Patent Office (to use their proper title) have really thought all this through as an educational tool, which presumably it is intended to be. The picture below, where Norvello demonstrates the principle of novelty, illustrates the point:

The caption reads "So to prove novelty, you [i.e. the player] have to search as many sources as you can to make sure no other invention shares the same features or functions as yours". Now, the IPKat may be being a bit picky here, but he was under the distinct impression that it was the primary job of the Patent Office to search as many sources as they could to make sure that no other invention shared the same features or functions. Obviously it's all very good if a patent applicant has already done a fair bit of searching and not found anything that anticipates his invention, but it is a bit misleading, to say the least, to suggest that this would be enough to get a patent, or indeed that it was the applicant's responsibility to prove novelty.

Does all this suggest that the UK Patent Office, like the USPTO, in reality (rather than in cartoon land) wants to give up on searching for prior art and instead leave examination to the applicant? The IPKat thinks we should be told the truth.

Merpel wonders what happened to Clarity Clare; she couldn't find her anywhere in the Pit. Has clarity gone out the window as a patentability requirement (to be replaced by marketability perhaps)?

The IPKat's superbly-updated 'Forthcoming Events' feature, which occupies a large slice of space on the left-hand side-bar of this weblog's front page, currently lists 31 conferences, seminars and events for your delectation. FREE events are listed in a cheerful blue.

It's new address time for the Class 46 European trade mark weblog. Up till now it has only been accessible via the somewhat cumbersome class46.blogspot.com, but now that site has been given the far classier class46.eu tag. Run by a ten-person team of bloggers from around Europe, Class 46 has posted over 1,000 items of European trade mark news in its first year, all of which are searchable and carry links to their sources.

Bad news for Bad Danes and their nefarious accomplices: earlier this week the Danish government adopted an important Bill setting out to strengthen the fight against violators of IP rights. This Bill is part of the Danish government's list of initiatives which have been set out specifically to strengthen efforts to prevent counterfeiting. Full details are available from the Class 46 weblog here -- or you can read it in the original Danish here.

Good news lurks around the corner for anyone interested in design protection in Oman. According to a WIPO Press Release the Sultanate of Oman has acceded to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The operative date for this Agreement to come into force for Oman is 4 March 2009.

Thursday, 18 December 2008

Charles Clark (no, not that one) has emailed the IPKat to inform him that WIPO has recently announced, in the December PCT Newsletter, that a new search service is due to be launched as from 1 January 2009. This will be known as the Supplementary International Search, under new Rule 45bis PCT (hidden deep inside this pdf document). The point of this, so WIPO says, is to allow applicants to have their international patent application more comprehensively searched in languages other than that in which the ISR is carried out. When this service comes in, the languages that will also be searched, courtesy of the Nordic, Russian or Swedish searching authorities will include Russian, Swedish, Norwegian, Icelandic and Danish.

Of course, all this extra searching will not be free of charge. A supplementary search fee (payable to the IB, naturally) will cost the applicant between 455 and 2,826 Swiss Francs, depending on which institute is selected. The applicant must also request any search no later than 19 months after the earliest priority date, but this should (in theory at least) allow the results to come in before a decision needs to be made on what to do in the national phase (at 30/31 months).

The IPKat can see how this would be a good idea, but only for a very limited selection of applicants and if there is a concern that there might be killer prior art lurking somewhere in one of these languages that has not been translated into a more commonly searched language. It might, however, become much more useful for applicants once Japan and China join the party, which seem to be the most obvious next candidates.

It is will happiness in his heart that the IPKat can inform his readers that the Intellectual Property Office of Papua New Guinea (or IPOPNG, as it likes to be known) has introduced its own website, which you can now visit at www.ipopng.gov.pg.

Right: the IPKat had always thought that an ipopng looked something like one of these little fellas ...

This piece of news was brought to him by Kimberley Evans (Davies Collison Cave), who incidentally is the only member of the DCC IP team whose surname begins with the letter 'E'.

"A new international treaty setting standards for trademark registration procedures will become effective in 2009 following its ratification by Australia on December 16, 2008. This is the tenth ratification of the Singapore Treaty on the Law of Trademarks (“the Singapore Treaty”) and will allow the treaty to enter into force on March 16. 2009.

WIPO Director General, Francis Gurry, welcomed this development saying that the entry into force of the Singapore Treaty ... opened the way for the branded goods industry to register and manage trademark rights cost-effectively and efficiently. This, he said, was a particularly welcome development for companies seeking to generate cost savings, and maintain their market position in the current turbulent economic circumstances [a nicely topical touch -- WIPO would have had to come up with quite a different line if we were all experiencing an economic boom].

... The Treaty standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communications technologies to process and manage evolving trademark rights. By establishing common standards for procedural aspects of trademark registration and licensing, the Treaty helps to create a level playing field for all economic operators that invest in branded goods. It recognizes developments in the branded goods industry [the IPKat wonders which Articles of the Treaty achieve this dramatic end ...] and marks a new approach to securing investment in product differentiation [... and this too]. A great deal of creativity and investment goes into the development of brands and it is vital for the industry to be able to secure that investment. The Singapore Treaty establishes trademark office administration rules applicable to all types of trademarks, taking into account the advantages and potential of electronic communication facilities, while recognizing the varying needs of both developing and developed nations. ...".

The IPKat, like most felines, spends 18 hours a day fast asleep and therefore appreciates anything that will give him a quiet life. The Singapore Treaty at least makes this desirable end a little more achievable. Well done everyone. Merpel says, alas there is still too much bureaucratic inconvenience to be overcome. Applying to register a trade mark online should be as easy as buying a book on Amazon -- but we're still some way short of this.

Wednesday, 17 December 2008

The UK IPO has indeed been busy. They have released research commissioned by its IP Crime Group that shows that 'shows that many businesses are not doing anything to ensure they protect their intellectual property'.

This is a BAD THING it seems. In the words of the press release:

Intellectual property is at the heart of so many businesses. It needs to be understood, protected, and respected [IPKat comment: does this remind anyone of the WIPO World Intellectual Property Day's theme that authors/creators 'deserve our admiration, our protection, and our respect'?] - both that which belongs to the company and the IP of others. It is therefore worrying that the research showed that:

40% of businesses surveyed took no practical action such as trade mark registration or employee training to ensure their and others IP is protected.

A third of businesses surveyed were not aware whether goods sold on their premises by external traders were legitimate or not.

Out of those who knew that employees were selling DVDs at work, nearly a fifth knew that these were counterfeit and still allowed such illegal activity to take place.

Similarly, over a quarter of respondents do not make staff aware that they must not download illegal content at work.

The IPKat has his suspicions about this report, or at least the way that the IPO has represented its findings. For a start, the Kat thinks there's a not so hidden agenda emerging from the questions that have been asked - i.e. you think IP's important, so why do you allow your employees to abuse other people's? More fundamentally, there seems to be an assumption throughout this report and the way that it has been presented that employers should act as policemen, protecting other people's IP against their employees.

He's not sure whether it's so worrying that 40% of businesses don't protect their IP. Many businesses just won't have IP at the core of their business. Your local newsagent isn't going to file many patents. He's not even likely to register a trade mark. However, there is protection in place (such as passing off) which comes into action automatically. When one looks at the statistics of business attitudes to infringement of other people's IP in the workplace, it doesn't look at bad as the IPO has suggested. Take for example the third point above - 20% knowledge of sale of fake DVDs. This has to be put in context. This is 20% of the people who knew that DVDs were being sold in their workplace. This was only 20% of those surveyed. In other words, 20% of 20% of the survey of 500 people (i.e. 20/500 if the IPKat's maths are correct) knew of such sales taking place.

Dilution event at IBIL, University College London, Bloomsbury

UCL's Institute of Brand and Innovation Law is hosting its Brands Seminar on 11 February 2009, 4.00pm for a 4.30pm start.

The title is Trade Mark Infringement without Confusion: Dilution. Speakers are:

Via the IPKat's friend Shabtai Atlow comes this link to the Wall Street Journal's Law Blog. Headed "Bambu, Maker of Rolling Papers, Sues to Blunt Obama Paraphernalia", it's all about a trade mark infringement action brought by the venerable Bambu rolling paper manufacturer (founded 1764) against Love Fatigue, the New York-based manufacturer of Barack Obama t-shirts. According to the blog,

"The complaint essentially alleges that Love Fatigue’s Barack Obama-related designs rip off Bambu’s trademark. “Significantly,” the complaint goes on, “Defendants are facilitating consumer confusion by describing their shirts as ‘Obambu.’ . . . Moreover, Defendants’ unlawful conduct is likely to subject Bambu to criticism and scorn insofar as Defendants are depicting President-elect Barack Obama smoking marijuana, and such depiction is likely to confuse the consuming public into believing that the offensive advertising emanated from Bambu.”".

The IPKat is really disappointed that this action is being brought in the United States and not in Europe following last month's Intel v CPM ruling (see IPKat here and here), where counsel on both sides could indulge in endless argument as to the state of mind of the relevant consumer, the likelihood of confusion and the extent to which the use of the mark on the t-shirt might be expected to affect the economic activity of consumers of the claimant's rolling papers.

Now that we all know that Open Source software licences are enforceable not just as merely as contracts but as IP infringements too (see Jacobsen v Katzer, noted by the IPKat here), is it any wonder that there are more breach of OS licence actions in the offing? The IPKat's friend Kristof Neefs (Laga) has drawn his attention to this piece in Ars Technica on the action brought by the Free Software Foundation (FSF) against Cisco for copyright infringement by failure to comply with the terms of the General Public License (GPL) under which the FSF's software was published. The Kat will keep an eye on this. He notes that the author of the Ars Technica article, Ryan Paul, feels that this action will not go too far before it settles, but there are three things at stake here: money, egos and genuine issues of principle. Resolve one of the three and there's a 33% chance of settlement; resolve two and the likelihood rises to 67% ...

A note in Mainichi Japan earlier this month, brought to the IPKat's attention by the enthusiastic Louise O'Callaghan (Hardwicke Building), informs him that the Japanese government is considering expanding the scope of trade mark registration to include sound and video images. The move, initiated by the Patent Office, is aimed at protecting video images and sounds intended for TV and online advertising. Examples include Sony's "It's a Sony" and Toyota's "Drive Your Dreams." A revision bill is expected to be submitted in 2010.

Tuesday, 16 December 2008

Some stuff came out of the IPO today about copyright: here and here. The UK government's current temporary IP stand-in, David Lammy (pictured right, and apparently in some pain; did someone electrify the lectern?), wants to have a "debate" about where copyright is going by issuing a "wide ranging consultation [...] on the future of copyright". The consultation document, available here (pdf), makes for some quite dull reading (although it is mercifully brief), as it doesn't really say anything of substance. What it does say is the usual guff about "creative industries" being important to the UK economy in the 21st century. What it doesn't say is why these creative industries need copyright terms that will, in many cases, last well into the 22nd century.

Responses to the consultation are due by 6 February 2009. The IPKat urges all those having an interest to let their views be known, but suggests that there would appear to be very little point in doing so, given recent news. Mind you, Andrew Gowers is not impressed by recent government ejaculations, which is at least something.

For anyone still interested, the consultation identifies four areas for debate:

1. Access to works: Is the current system too complex, in particular in relation to the licensing of rights, rights clearance and copyright exceptions? [IPKat answer: a very big YES; just look at the state of the CDPA 1988] Does the legal enforcement framework work in the digital age? [IPKat answer: oh yes: just ask Davenport Lyons; the correct question should instead be whether this is a good thing]

2. Incentivising investment and creativity: Does the current copyright system provide the right incentives to sustain investment and support creativity? [IPKat answer: incentives, yes; the right incentives: no] Is this true for both creative artists and commercial rights holders? [IPKat answer: creative artists are always expoited by commercial rights holders, who always get the better deal; changing copyright law is not going to change this commercial reality] Is this true for physical and online exploitation? Are those who gain value from content paying for it? [How does one 'gain value from content'? Was this inserted by the BPI?]

3. Recognising creative input: Does the current system provide the right balance between commercial certainty and the rights of creators and creative artist[s]?[IPKat answer: no, obviously] Are creative artists sufficiently rewarded/ protected through their existing rights? [IPKat answer: some are, some aren't; why should copyright law care? Why would any more rights affect this?]

4. Authenticating works: What action, if any, is needed to address issues related to authentication? [IPKat comment: eh?] In considering the rights of creative artists and other rights holders is there a case for differentiation? [IPKat comment: what is this nonsense about?]

Go ahead and speak your brains, if you must. This Kat is going to have a lie down...

It's not often that a decision of the Court of First Instance of the European Communities on a Community trade mark matter runs to 207 paragraphs and has its own Table of Contents (inconveniently situated at the end of the decision, where you might not immediately think of looking for it), but this morning's ruling in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market, Anheuser-Busch, Inc. is one such case.

In short, Anheuser-Busch, Inc. applied to register as a Community trade mark the sign illustrated on the right for goods in Classes 16, 21, 25 and 32. It also filed three applications to register the word BUD in Classes 32 (beers), 33 (alcoholic beverages), 35 (setting up databases, gathering data and information in databases), 38 9 (telecommunications, ie making available and supplying data and information, supplying and communicating information stored in databases), 41 (education, entertainment) and 42 (restaurant, bar and pub services; operating a database).

As is traditional in these matters, Budvar opposed, citing (i) the figurative Bud mark illustrated here for ‘all types of light and dark beer’, effective in Austria, Benelux and Italy; (ii) the appellation of origin ‘bud’, registered, under the Lisbon Agreement, on 10 March 1975 with the World Intellectual Property Organisation (WIPO) in respect of beer and effective in France, Italy and Portugal; (iii) an Austrian appellation of origin ‘bud’ protected in Austria under a bilateral convention with the now-defunct Czechoslovakia.

The Opposition Division partially upheld the opposition filed against registration of the trade mark applied for. It considered that Budvar had demonstrated that it had a right to the appellation of origin ‘bud’ in France, Italy and Portugal, though in relation to Italy and Portugal the arguments put forward by Budvar were not specific enough to determine the scope of its protection under the national law. It found that the ‘restaurant, bar and pub services’ covered by one of the applications were similar to the ‘beer’ covered by the appellation of origin ‘bud’, there being a likelihood of confusion given that the signs concerned were identical. However, in respect of the other goods, and in the context of the applicable French law, Budvar had failed to demonstrate how the use of the mark applied for was likely to weaken or undermine the reputation of the appellation of origin concerned, when the goods covered were different. Thus the Opposition Division upheld the opposition filed only in respect of ‘restaurant, bar and pub services’ covered by Anheuser-Busch's fourth application. All other grounds of opposition against the other three applications were dismissed.

Both parties appealed, the Board of Appeal dismissing all Budvar's appeals and allowing that of Anheuser-Busch. It considered that Budvar no longer appeared to refer to its international figurative mark as the basis of its opposition, but solely to the appellation of origin ‘bud’ -- but it was difficult to see how 'bud' could be considered to be an appellation (or designation) of origin, or even an indirect indication of geographical origin [a French court had actually ruled the appellation 'bud' under the Lisbon Agreement to be invalid, in proceedings that were themselves under appeal]. The Board also held that the evidence provided by Budvar to show use of the appellation of origin ‘bud’ in Austria, France, Italy and Portugal was insufficient. Thirdly, it held that the opposition failed on the ground that Budvar had not demonstrated that the appellation of origin in question gave it the right to prohibit use of the word ‘bud’ as a trade mark in Austria or France.

This morning brought some good news for Budvar, as the Court of First Instance, consolidating all four appeals, annulled the decisions of the Board of Appeal. To add insult to injury, Anheuser-Busch was ordered to pay one third of Budvar's costs, the other two-thirds being met by OHIM. According to the Court, the protection of 'bud' under the Lisbon Agreement could not be disregarded:

"87 In the present case, the appellation of origin ‘bud’ ... was registered on 10 March 1975. France did not declare, within the period of one year from the date of receipt of notification of the registration, that it could not ensure the protection of that appellation of origin. ... when the contested decisions were adopted, the effects of the appellation of origin at issue had not been declared invalid, in France, by a decision against which there is no appeal.

88 ... Community law relating to trade marks does not replace the laws of the Member States on trade marks ... Accordingly, the Court of First Instance has held that the validity of a national trade mark may not be called in question in proceedings for registration of a Community trade mark ...

89 It follows that the system ... presupposes that OHIM takes into account the existence of earlier rights which are protected at national level. Accordingly, ... the proprietor of another sign used in the course of trade of more than mere local significance and which is effective in a Member State may, subject to the specified conditions, oppose the registration of a Community trade mark ...

90 Since the effects of the appellation of origin ‘bud’ have not been declared definitively to be invalid in France, the Board of Appeal ought ... to have taken account of the relevant national law and the registration made under the Lisbon Agreement, and did not have the power to call in question the fact that the claimed earlier right was an ‘appellation of origin’.

91 ... if the Board of Appeal had serious doubts as to whether the earlier right could be classified as an ‘appellation of origin’ and therefore as to the protection to be afforded to it under the national law relied on, when that issue was in fact the subject of court proceedings in France, the Board was entitled ... to suspend the opposition proceedings until a final judgment on the matter was delivered".

The bilateral treaty between Austria and Czechoslovakia also provided protection for the appellation 'bud':

"98 ... the bilateral convention is still effective in Austria for the purposes of protecting the appellation ‘bud’. In particular, the documents lodged in the proceedings do not show that the Austrian courts have held that Austria or the Czech Republic did not intend to apply the principle of the continuity of treaties to the bilateral convention, following the break-up of the Czechoslovak Socialist Republic. Moreover, there is no indication that Austria or the Czech Republic have denounced that convention. In addition, the ongoing proceedings in Austria have not led to the adoption of a final judicial decision. ... the Board of Appeal ought to have taken into account ... Budvar’s claimed earlier right without calling in question the actual classification of that right".

The Court added that, while an earlier trade mark right upon which an opposition is based may be discounted if that trade mark has not been the subject of genuine use, the same does not apply to oppositions founded on a non-registered trade mark or another sign used in the course of trade of more than mere local significance. Accordingly,

"... under Article 8(4) of Regulation No 40/94, it is possible for certain signs not to lose the rights attached to them, notwithstanding the fact that no ‘genuine’ use is made of them. ... an appellation of origin registered under the Lisbon Agreement cannot be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin. Moreover, the protection conferred on the appellation of origin is ensured without renewal of registration ... That does not mean that it is possible not to use the sign relied on ... However, the opposing party need do no more than show that the sign concerned was used in the context of a commercial activity with a view to economic advantage, and need not prove that the sign has been put to genuine use ...".

The IPKat found this decision a compelling read, not least because he must confess that he had little expectation that Budvar would come out of this with anything more positive than a large bill for costs. A careful reading of the cited sources does however suggest that the CFI has got it right. He also suspects that, given the issues of money and principle at stake, there will be a further appeal. Merpel finds herself thinking how sad it is that, while the law on trade marks and the law on appellations serve similar purposes from the consumer's point of view, the former is underpinned by a doctrine of "essential function" while the latter is not.

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